We’ve covered domain name disputes before, but nothing quite like the case (which can be accessed here
) that recently came up before the Delhi High Court, the judgement for which was delivered on 14th December by Justice Murlidhar.
On one side, we have the petitioner trying to defend his registration of the domain name www.internet.in and on the other, we have a registered trademark proprietor trying to challenge the registration on the ground that he is the owner of the trademark ‘internet’, which on face value seems silly, but gets even more absurd when it is learnt that the trademark was registered in respect of ‘Tobacco, raw or manufactured, smokers articles, matches included in Class 34’.
BACKGROUND TO THE CASE
Just backtracking, it is seen that the Respondent held the registration for the trade mark ‘internet’ under Class 34 with effect from March of 2003. The Petitioner, a resident of the U.S.A., got the domain name ‘internet.in’ registered with the .IN Registry in February of 2005. The Respondent wanted the registration of the domain name cancelled.
To recap, the arbitrator, in an award dated 5th July, 2006 made the following ruling:
1) The domain name ‘internet.in’ of the Petitioner herein was identical and confusingly similar to a trade mark of Respondent. However, the Respondent failed to show his rights in the mark.
2) The Petitioner had no right or legitimate interest in the domain name;
3) The Petitioner got registered the domain name ‘internet.in’ in bad faith.
4) The domain name ‘internet.in’ was to be confiscated by the .IN Registry and kept with it.
The dispute reached the Delhi High Court under S.34 of the Arbitration and Conciliation Act, for which the allowable grounds are that the decision is opposed to public policy of India or is patently illegal.
Arguments of the Respondent
Likelihood of confusion
The respondent claimed that he had been using the trademark ‘internet’ in relation to tobacco an tobacco products for over three years and that the domain name registered by the petitioner, ‘internet.in’ was confusingly similar to his registered trademark and demanded cancellation of the said domain. In rebutting the argument made by the Petitioner that the Respondent’s business was restricted to tobacco so there was no likelihood of confusion, it was argued that even if the domain name were to be used by the Petitioner for internet related services, there was bound to be confusion since it was identical to the registered mark of Respondent.
Bad faith registration
The respondent adduced evidence to suggest that the petitioner was in the habit of registering domain names in which he had no legitimate interest such as ‘air.in, computer.in, ink.in, toner.in, usa.in and wise.in’. Essentially, the respondent argued that the Petitioner was indulging in cyber-squatting, with the ultimate objective of selling them to an interested party at a much higher price at a later date. (See our post
covering the Arun Jaitley cuber-squatting case here).
Arguments of the Petitioner
Burden on respondent
The Petitioner argued that the burden was on the Respondent to demonstrate that the mark ‘internet’, which is highly descriptive and generic, was capable of being trademarked or had acquired a secondary meaning. There was no record of sales, revenue, surveys, advertisements etc. provided by the Respondent and hence it had failed to demonstrate its right in the mark.
On the issue of bad faith registration, the petitioner contended that it genuinely intended to “legitimately use the domain name (www.internet.in) as the identifier for internet related goods and services on a website.” Moreover, the Petitioner had not put up the domain for sale, indicating that it was not a case of ‘cyber squatting’ but simply ‘speculative registration’, which is permissible under law.
No knowledge of trademark
The Petitioner also claimed absence of knowledge of the Respondent’s right or interest in the mark ‘internet’ and moreover, that other domains such as internet.biz, internet.net etc. were still available, leading to the assumption that it was not a protected trademark.
Non-use of Trademark
The Petitioner also alleged that that Respondent had sought to monopolize several generic words such as business, web, jobs, hotels, etc. without a shred of evidence of use of the said words as trademarks and neither had the respondent provided evidence of the use of the trademark ‘internet’ in relation to tobacco products as alleged in the plaint.
Registration for logo onlyIt was also submitted that the Respondent’s trademark registration was for the logo mark ‘internet’, which did not give him any rights in the word per se.
Different markets/usersLastly, it was contended that since the Petitioner intended to use the domain name for ‘internet related services’, as a generic word, there could be no confusion with the logo ‘internet’ registered for tobacco and associated tobacco products.
DECISION OF THE COURT
Differences between UDRP and INDRP
The Arbitrator interpreted Para 4(i) of the INDRP to mean that there was a burden on the complainant (in this case the Respondent) to show that (a) the domain name was confusingly similar to the trademark of the complainant and that (b) the complainant has a right in the trademark (the two elements mentioned in sub-para [i]). Thus, it was not necessary for the Respondent to establish the elements in part (ii) and (iii) relating to absence of interest of the Registrant in the domain and bad faith registration, respectively. Thus, the court ruled that the Respondent could success if he proved the existence of the grounds mentioned in sub-para (i) of Para 4 only. Alternatively he could succeed if he proved that the grounds in sub-paras (ii) and (iii) existed.
On the question of similarityOn the issue of the domain being identical to the registered trademark, the court held that there is no doubt that the domain name is likely to cause confusion in the minds of ‘persons of ordinary memory and imperfect recollection’ and that they are in fact identical. Further, in resolving the issue of ‘internet related services’ and ‘tobacco’ constituting different markets, users and class of goods/services, the court held that ‘the mere fact that the goods for which Respondent No. 2 holds registration is different from internet related services which the Petitioner proposes to offer using the domain name does not mitigate the possibility of such confusion, given the nature of e-commerce and the range of products that can be purchased on the net’.
Respondent’s interest in the trademarkThe second element required to be demonstrated in sub-para (i) of para 4 of the INDRP is the fact of the complainant (Respondent) having rights in the trademark, which is identical to the impugned domain name. The court deviated from the opinion expressed by the Arbitrator and observed that a combined reading of Section 28 (1) of the TM Act, which gives the registered proprietor of a trademark “the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered…” and Section 31 of the TM Act, which raises a presumption of validity of the registration, the Respondent in this case, had demonstrated a right over the mark ‘internet’.
Legitimate interest of the Registrant (Petitioner)
Although examining sub-paras (ii) and (iii) of para 4 of the INDRP was unnecessary since sub-para (i) conditions were satisfactorily demonstrated by the Respondent, the court went into a discussion on the same, nevertheless. It was seen that once the Respondent had discharged the initial burden of showing that the Petitioner had no legitimate interest in the domain name, it was the duty of the Petitioner thereafter to show “use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. The court found that the Petitioner failed to provide evidence of the same.
Petitioner’s domain name registration was in bad faith
The Respondent argued before the court that the bulk registration of domains with no intention to pursue business activities was demonstrative of bad faith registration on the part of the Petitioner. The court considered it appropriate for the Arbitrator to question the intentions of the petitioner in registering 1747 domain names, several of which are generic in nature, to conduct businesses legitimately. In questioning the motives of the Petitioner, the court declared that “it is difficult to believe that the Petitioner, who is obviously an experienced hand in registering domain names, did not do any homework before registering domain names in a series of generic words like internet, toner, computer, ink etc. with the .IN Registry”.
ORDER OF THE COURT
While allowing the arbitrator’s award for cancellation of the registration of the domain, it found that the further order of the arbitrator to direct confiscation and retention of the said domain name by .IN Registry was without any legal basis since there was no provision for such a direction under Para 10 of the INDRP dealing with ‘remedies’. Neither should the domain be transferred to the Respondent who failed to demonstrate that he was using the mark ‘internet’ in line with his business.
Thus, the court passed the following order:
1) The domain name www.internet.in should be struck off the register and the registration stands cancelled.
2) The Respondent in not entitled to have the domain transferred in his favour.
3) The direction to have the domain confiscated by the .IN Registry is set aside.
While the entire case seemed like a boxing match between two parties that were, in my opinion at least, not fully coming clean with their underlying motives, tirelessly going back and forth with their arguments, it is extremely commendable that we have a well-reasoned judgment for future reference in domain name disputes and credit must go to Justice Murlidhar, who has time and again shown a genuine appreciation for the legal niceties in such matters and delivered another useful judgement on the issue of domain name disputes.
Update: Based on the discussions in the comments section, it appears the interpretation of the INDRP is a curious one and deserves further examination. Shamnad sir has explored this issue in a separate post that can be found here.